Patents > Organization > Examination Policy > MPEP Staff > 35 USC 112 ¶ 1 > Enablement Decision Tree - text version


  1. Analyze each claim as a whole.
  2. Search the prior art.
  3. Consider the undue experimentation factors with respect to the claims as a whole and the specification.
  4. Does the specification teach how to make and use at least one embodiment encompassed by the claims as a whole without undue experimentation?

    Note: If there is a working example, the answer to the question cannot be "No". The answer also cannot be "No" if the sole reason is the lack of working example.
    1. 4.1  No - Write a rejection using form paragraph 7.31.002. Give specific reasons and make sure that any relevant issues regarding the breadth of the claims relative to the guidance in the disclosure are raised. *

      4.2 Yes -

      Are the enabled embodiments representative of the full scope of the claim?

      4.2.1  Yes - No enablement rejection.

      4.2.1  No - Write a scope rejection using form paragraph 7.31.03 and/or 7.33.01. Give specific reasons why the working examples or enabled embodiments are not sufficient to enable the breadth of the claims.*


    *Example: If scientific technical reasons cannot be given or properly supported with sufficient evidence, then the answer to the previous question should have been "yes".

KEY: e Biz=online business system fees=fees forms=formshelp=help laws and regs=laws/regulations definition=definition (glossary)

The Inventors Assistance Center is available to help you on patent matters.Send questions about USPTO programs and services to the USPTO Contact Center (UCC). You can suggest USPTO webpages or material you would like featured on this section by E-mail to the While we cannot promise to accommodate all requests, your suggestions will be considered and may lead to other improvements on the website.